Posts Tagged: "patents"

CAFC Vacates Section 112 Indefiniteness Ruling, Sending St. Jude Medical Back to Court

On April 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Niazi Licensing Corp. v. St. Jude Medical S.C., Inc. in which the court affirmed most of a ruling from the District of Minnesota, including sanctions against Niazi for improper use of expert testimony, as well as a finding of no induced infringement by St. Jude on one of Niazi’s asserted patent claims. However, the Federal Circuit’s decision reversed the Minnesota district court’s ruling invalidating most patent claims asserted by Niazi for indefiniteness under Section 112. The CAFC found that Niazi’s asserted claims were not invalid simply for including descriptive words or terms of degree, as long as the intrinsic record and extrinsic evidence enable a skilled artisan to identify the boundaries of a claim’s scope.

CAFC Orders New Damages Trial for Roche, Clarifies Standard for Patent Damages Limitations Period

On April 8, in a mixed and split precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed, reversed, vacated, and remanded a decision by the U.S. District Court for the district of Delaware in a patent infringement suit brought by Meso Scale Diagnostics (Meso) against Roche Diagnostic Corporation and BioVeris Corporation (collectively Roche). Judge Pauline Newman dissented. Meso brought suit claiming that Roche violated exclusive license rights belonging to Meso by both direct and induced infringement of their patents. The CAFC affirmed the district court’s findings on the direct infringement claim, reversed the induced infringement finding, vacated the awarded damages, and remanded for a new trial on damages.

Russia’s Invasion of Ukraine Reiterates Why Companies Must Rethink Their China IP Strategies

Every night for the last six weeks, the world has seen images and videos of the Russian military laying waste to Ukraine in what can only fairly be characterized as a medieval campaign of destruction. The Russian military has annihilated entire cities, targeted civilians, murdered women and children, and is preventing the American Red Cross from delivering food and medical supplies to civilians trapped and unable to escape. Nearly the entire world has condemned the atrocities committed during this unprovoked Russian war of aggression against its sovereign neighbor. China, who has entered into a no-limits cooperative agreement with Russia, is a notable exception.

O’Malley, Kappos, Michel and Other Experts Debate How Anti-IP Narratives are Threatening U.S. National Security

The LeadershIP 2022 Conference, for which IPWatchdog was a partner, took place earlier this week in Washington, DC, and featured leaders in U.S. government and intellectual property (IP) discussing the way that IP policies interact with and impact national security issues. The overarching sentiment from panelists was that all three branches of U.S. government are failing to prioritize a strong IP system, which could result in the United States falling behind as an innovation leader, to the benefit of potential bad-faith competitors like China and Russia.

Patent Filings Roundup: Magentar Launches Tenth and Eleventh Campaign; Joao Entity Hits State Healthcare; Board Terminates Eight Petitions Pre-Institution Over Patent Owner Objections

A normal week at the Patent Trial and Appeal Board and a heavy week in the district courts saw 100 new patent complaints filed and 30 petitions before the Board; there were 79 district court terminations as well, as cases settled quickly and a number of withdrawals or refilings continue in and out of the Western District of Texas. Intellectual Ventures—hearing footsteps from the Federal Circuit’s mandamus of Judge Albright transferring automotive cases out of his jurisdiction for lack of venue over car companies—has refiled Eastern District of Texas complaints against car companies in the Northern District of Texas, presumably because those companies have factories or some other serious presence there.

New Dawn: Confirmation of Undersecretary Vidal Presents Opportunities to Expand Diversity Initiatives

My congratulations to Kathi Vidal of Winston & Strawn on her confirmation as the new Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) and her new role as advisor to the President and the administration on intellectual property matters. Undersecretary Vidal’s credentials are beyond merely impressive. Her capabilities and her new position afford her an opportunity to influence intellectual property policy at a magnitude few ever experience, including a profound opportunity to enhance diversity. It is well established that diversity unlocks innovation and that innovation is critical to American competitiveness, jobs, national security, and quality of life. One of the tenets of promoting diversity is providing leaders, role models, and mentors from all reaches of the community to encourage participation from others of similar backgrounds.

IP Stakeholders Cheer as Senate Finally Confirms Vidal to Head USPTO

The U.S. Senate confirmed Kathi Vidal as the next U.S. Patent and Trademark Office (USPTO) Director Tuesday night in a voice vote. Vidal’s confirmation comes after more than one year with no Senate-confirmed Director or Acting Director at the agency. Drew Hirshfeld has been operating under the title of “Performing the Duties and Functions of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO” since January 2021.

Tillis Renews Request to FDA and USPTO for Independent Assessment of I-MAK Patent Data

On Friday, April 1, Senator Thom Tillis (R-NC) wrote to the Food and Drug Administration (FDA) and the U.S. Patent and Trademark Office (USPTO) to once again voice his concerns about several sources advancing data on the effects of pharmaceutical patents on drug pricing. Tillis is specifically troubled that the data seems to be based on opaque methodologies and to contain inaccurate or incomplete information that may mislead policymakers. In a previous letter to these organizations, he requested the agencies conduct an independent assessment of the accuracy and reliability of those sources. In the present letter, Tillis again highlights his concern about work from the Initiative for Medicines, Access & Knowledge (I-MAK). He had previously written to Tahir Amin, Co-Founder and Co-Executive Director of I-MAK, requesting that I-MAK provide a detailed explanation of its methods to allow others to check the accuracy of I-MAK’s patent data and to assess the credibility of its other assertions.

PTAB Denies OpenSky’s Request for Rehearing But VLSI Cases Highlight Broader PTAB Problems

On March 28, the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) denied petitioner OpenSky Industries’ request for rehearing of an earlier decision denying institution of inter partes review (IPR) of one of two VLSI patents supporting a massive $2.2 billion infringement damages verdict in U.S. district court. The ruling is the latest chapter in a series of challenges to VLSI’s patent claims, which has forced VLSI to run a gauntlet arguably demonstrating that the PTAB fails to function as the alternative forum for speedy validity resolutions originally envisioned by Congress when it passed the America Invents Act (AIA) into law back in 2011.

As Judiciary Committee Votes, Judge Ketanji Brown Jackson Responds to Tillis on IP and Antitrust

As part of the ongoing confirmation process for Judge Ketanji Brown Jackson to the U.S. Supreme Court, Senator Thom Tillis (R-NC) submitted a number of questions for the record, including 35 IP-related questions on topics ranging from patent eligibility to anti-suit injunctions and 15 antitrust questions, to which Judge Jackson recently responded. While Tillis voted against Judge Jackson’s appointment to the U.S. Court of Appeals for the D.C. Circuit Court due to concerns about her judicial philosophy, he recently indicated that she has the appropriate temperament for the Supreme Court. The Senate Judiciary Committee is voting on Jackson’s confirmation today.

Judge Michel Implores Full CAFC to Fix ‘Fuzzy’ Rebuttable Presumption of Nexus Jurisprudence

On March 20, Zaxcom, Inc., the owner of U.S. Patent No. 9,336,307 for Engineering Emmy® and technical OSCAR award-winning wireless microphone technology, petitioned the U.S. Court of Appeals for the Federal Circuit (CAFC) for rehearing en banc after the court found its original patent claims unpatentable as obvious. Zaxcom argued that the CAFC’s precedent in Fox Factory, Inc. v. SRAM LLC, 944 F.3d 1366 (Fed. Cir. 2019), “confused the law” regarding a rebuttable presumption of nexus. Now, former CAFC Chief Judge, Paul Michel, has filed an amicus brief supporting Zaxcom and asking the full CAFC to resolve “unintentional confusion and conflict” in the court’s obviousness jurisprudence.

IP Protects JLTV Despite Sale of Technical Data Package

Oshkosh Corporation has run through a $6.7 billion contract to produce the first 17,000 Joint Light Tactical Vehicles (JLTVs) in a Department of Defense (DOD) program that could produce 55,000 vehicles for the Army and Marines. Oshkosh won the low-rate initial production (LRIP) contract in 2015 to be the sole manufacturer of JLTVs by submitting an original, technologically superior design in a litigated competition with other, arguably, more dominant players in the defense market. Bids for the contract to produce the next tranche of over 15,000 vehicles are due later this year. Competitors for the $7.3 billion recompete contract, including GM Defense, AM General and Navistar, will have access to the proprietary design of the JLTV that Oshkosh used to win the LRIP contract. The U.S. Government has made available to interested bidders a Technical Data Package (TDP) covering the JLTV after purchasing an option in 2016. Oshkosh, however, maintains an intellectual property (IP) portfolio that could counter the sale of the TDP.

CAFC Says Dyfan Claim Limitations are Not Invalid Due to Means-Plus-Function Format

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed and remanded a decision by the U.S. District Court for the Western District of Texas that Dyfan, LLC’s claims were invalid as indefinite. The CAFC concluded that the disputed claim limitations were not drafted in means-plus-function format, and therefore 35 U.S.C. § 112 ¶ 6 did not apply. Patent owner Dyfan sued Target Corp. for infringement of various claims of U.S. Patent Nos. 9,973,899 and 10,194,292. Following a claim construction hearing, the district court found that the disputed (1) “code”/“application” limitations and (2) “system” limitations of the patents-in-suit were invalid as indefinite. Specifically, the district court found that: (1) these claim limitations of the patents-in-suit are in means-plus-function format under Section 112 ¶ 6 and (2) the specification does not disclose sufficient structure corresponding to the recited functions. Dyfan subsequently appealed.

Lessons from Junker v. Medical Components, Inc. on Commercial Offers for Sale Invalidating a Patent

Recently, the U.S. Court of Appeals for the Federal Circuit (CAFC) further explained the “on-sale” bar in Junker v. Medical Components, Inc., Case No. 2021-1649 (Feb. 10, 2022). As previously reported here, the case hinged on whether a letter between Larry Junker’s business partner and Boston Scientific Corporation (BSC) was a “commercial offer for sale” before the one-year grace period took effect. The CAFC held that all necessary terms for a commercial offer were present in the letter, and therefore, the letter qualified as a commercial offer for sale invalidating Junker’s patent.

ED of Texas Adopts Magistrate’s Claim Construction in Finding No Infringement of Debit Card Patents

On March 16, the United States District Court for the Eastern District of Texas Marshall Division adopted the Report and Recommendation (R&R) of a magistrate judge and granted two motions of non-infringement for Simon Property Group L.P. (Simon) and Blackhawk Network, Inc. (Blackhawk). AlexSam, Inc. filed suit for patent infringement against Simon and Blackhawk, alleging infringement of U.S. Patent No. 6,000,608 (the ‘608 patent). AlexSam asserted that “[t]he ‘608 Patent covers a variety of important technologies relating to the debit card industry,” and “[t]he multifunction card system disclosed in the ‘608 Patent enabled consumers and retailers to use existing point-of-sales devices, the existing banking infrastructure, and a bank identification number (BIN) to perform financial transactions.”